what are utility patents

What Are Utility Patents?

Whether you're an inventor who wants to protect his invention or you're just interested in learning what a utility patent is, you've come to the right spot. The USPTO (United States Patent and Trademark Office) offers inventors the ability to protect their invention by obtaining a patent on them. So, what are utility patents? We will cover this below.

What Are Utility Patents?

Utility patents are an intellectual property right that allows patent holders to restrict others from using, making, selling, offering to sell, and importing his patented invention to the United States for a limited period of time. Utility patents last for 20 years from the date an inventor files his utility patent application with the patent office.

A utility patent can be acquired by an inventor who has created a new machine, invention, process, or composition of matter. Said differently, a utility patent can be obtained to protect how a product works and how it's used by the end-user.

Once a utility patent application is approved or granted by the USPTO, an inventor can stop others from using, making, and selling the patented invention or product.

An inventor does not have the right to control who uses, makes, and sells his invention until the patent office grants his patent application. While a patent application is pending at the patent office, an applicant cannot sue anyone for patent infringement.

Utility patents are a very important form of intellectual property rights that offer inventors tremendous protection and control over their invention. They allow inventors to exclusively profit from their invention by excluding others from making and selling the patented invention.

That said, obtaining a utility patent can cost a lot of money. A simple straightforward utility patent for a simple invention could cost anywhere from $8,000 to $15,000, with more complex inventions costing more than $15,000 to patent.

How to Get a Utility Patent For an Invention?

For an inventor to get a utility patent for his invention, he must prepare and file a utility patent application with the USPTO. Prior to preparing a patent application, an inventor must be able to describe how his invention works, as well as how his invention can be used by the end-user.

Also, an inventor cannot patent an invention or machine that has been patented by others or has been disclosed to the public. As such, an inventor must conduct a prior art search to determine that his invention is new and has never been patented or publicly disclosed.

It's critical to conduct a prior art search prior to preparing and filing a patent application. It's critical because patenting an invention costs a lot of money and if you find that someone else has already patented the same invention, it's not worth pursuing a patent because the patent office will reject your patent application if someone else has already patented the same invention.

That said, if your prior art search does turn up inventions that are similar to yours, you can proceed by patenting your invention by either filing a provisional patent application or filing a regular, nonprovisional utility patent application.

Although the patent office allows inventors to patent their own invention, they do recommend that applicants without experience patenting an invention hire an attorney to assist them with preparing their patent application, filing it, and prosecuting it.

After preparing a utility patent application, what should inventors do?

After preparing a utility patent application, an inventor needs to file his application with the patent office. When filing a patent application, an inventor must pay the patent office filing fees, patent search fees, and patent examination fees.

To obtain a utility patent, an inventor must be able to explain these two things in his patent application. Although an inventor does not need to have a working prototype of his invention to patent it, he must be able to describe in much detail how to make his invention and how to use it.

What Do Utility Patents Protect?

Utility patents protect the functional aspects of a new machine, invention, process, or composition of matter. Said differently, utility patents protect how an invention works and how an invention is used by consumers or others.

Utility patents allow inventors to restrict others from using, making, selling, offering to sell, and importing the patented invention to the United States for a limited period of time. Utility patents grant inventors this right for 20 years, starting from the moment an inventor files his utility patent application with the patent office.

The great thing about utility patents is that they protect how an invention works or how it achieves its desired result. This means that if someone else creates an invention that looks different from an inventor's invention but internally works the same way or uses the same steps to achieve the desired outcome, a patent holder will still be able to stop that party from using, making, and selling that product or invention.

That said, it is a patent holder's job to look for bad actors who are using, making, or selling his patented invention without his express permission and asking them to stop using it. The patent office only grants patent rights, it does not enforce them, instead, it's the patent holder's job to enforce his rights.

If an inventor finds someone who is making unauthorized use of his invention, he can send them a cease and desist letter, asking them to stop the infringing use of his invention.

If the party does not stop its unauthorized use, the patent holder can bring a lawsuit against the bad actor in Federal District Court for patent infringement.

If the patent holder is successful in his lawsuit against the bad actor, he may be able to obtain an injunction to stop the infringer from using, making, and selling the patented invention. In some circumstances, inventors can even obtain monetary damages for any losses the patent holder sustained as a result of the bad actor's infringement.

How Long Do Utility Patents Last?

Utility patents last for 20 years from the date an applicant applies for a utility patent application. If an inventor files a regular, nonprovisional patent application, the patent term starts from the date an inventor files his nonprovisional utility patent application.

On the other hand, if an inventor files a provisional patent application and then files a nonprovisional patent application that claims the benefit of an earlier-filed provisional patent application, an invention will have a priority date of provisional application and the patent term would start from the date of filing the nonprovisional utility patent application. This effectively offers a patent term of 21 years.

For example, if an inventor files a provisional patent application on January 1, 2019, and files a nonprovisional patent application that claims the earlier filing date of the provisional patent application on January 1, 2020. The patent term would be 20 years and the patent would expire on January 1, 2040. The patent term begins at the time of filing the nonprovisional patent application.

Note: If an inventor chooses to file a provisional application, he should know that a provisional application can never turn into a granted patent, meaning that for an inventor to obtain a patent, he must file a regular, nonprovisional patent application that relates to an earlier-filed provisional application.

A nonprovisional patent application must be filed within 12 months of filing a provisional application. If a nonprovisional application is not filed within the 12 month grace period, a provisional application will be deemed to have been abandoned and the application will lose the early filing date obtain by the provisional application.

Can a Utility Patent Be Renewed After It Expires?

A utility patent cannot be renewed after it expires. Once a patent expires because the patent term has ended, it cannot be renewed. At this expiration of the patent term, the patented invention falls into the public domain, meaning that anyone can use, make, and sell the patented invention without having to obtain the patent holder's permission to do so.

Inventors often seek to prolong their monopoly over an invention by coming up with improvements to their existing invention and patenting those improvements. That patent office allows inventors to patent improvements to an invention so long as some requirements are met.

For example, if an inventor had a patent on a chair for 20 years and the patent expired, the inventor may be able to obtain an improvement to such an invention, such as developing a rocking chair.

In this example, while an inventor may have an improvement patent for a rocking chair, he can only stop others from making a rocking chair but he cannot stop others from making a regular chair that was once patented.

What is the Difference Between a Utility Patent and a Design Patent?

The difference between a utility patent and a design patent is that a utility patent protects how an invention works and how it's used by others, whereas a design patent protects how an invention looks or its appearance.

For example, if you have a pair of nail clippers, a utility patent can be obtained to protect how the nail clippers work and how a person uses the nail clippers to clips his nails.

In this example, a design patent may be obtained to protect how the nail clippers look, but to obtain a design patent over the appearance of nail clippers, the nail clippers must have a new and unique appearance that no other nail clippers have.

Design patents cannot be used to protect the functional aspects of the nail clippers because design patents can only be used to protect purely aesthetic aspects of nail clippers.

How Much Does it Cost to Obtain a Utility Patent?

Obtaining a utility patent on a simple and straightforward invention usually costs anywhere between $8,000 and $15,000, depending on the complexity of the invention you're seeking to patent, as well as the geographical location of your attorney. Attorneys in different places charge different amounts.

If you can't afford an attorney, you should consider hiring a patent agent to assist you with the preparation of your utility patent application, filing it with the patent office, and prosecuting for you. Patents agents are qualified and licensed by the patent office to assist inventors with patenting their inventions.

What is a Utility Patent?

At this point, you should know that a utility patent is an intellectual property right that is granted to inventors who create new inventions, machines, processes, and patent them with the patent office. A utility patent allows patent holders to control who uses, makes, sells, and imports the patented invention to the United States. A utility patent lasts for 20 years from the date an inventor files his patent application with the patent office. That said, once a utility patent expires, the patented invention falls into the public domain, allowing the public to use, make, and sell the once patented invention. If you have any general questions or comments, please feel free to leave them in the comments section below.


how long does a provisional patent take to get

How Long Does a Provisional Patent Take to Get?

Whether you've finished working on your invention or you're still working on it, you might be wondering about protecting it with a provisional patent. We are here to tell you that although there is no such thing as a provisional patent, you're probably referring to filing a provisional patent application. A provisional patent application is often referred to as a provisional patent. How long does it take to file a provisional patent application? We will answer this below.

How Long Does a Provisional Patent Take to Get?

As we previously mentioned, there is no such thing as a provisional patent, but inventors can file a provisional patent application to obtain a priority date for their invention. You can apply for a provisional patent application as soon as you can explain how your invention works and how it can be used. You do not need to have a working prototype of your invention to file a provisional patent application. So, how long it takes to file a provisional patent application depends on how quickly you can prepare and file a provisional patent application with the USPTO. Here is an awesome and detailed guide on how to file a provisional patent.

To get a provisional patent application, you need to be able to describe your invention, how it works, and how it's made. You will also need to disclose basic information, such as the name of the inventor, his home address, and the correspondence address to file a provisional patent application. Also, you'll need to pay a small filing fee to file a provisional patent application.

Once you've filed a properly prepared provisional patent application, you'll be able to market your invention or product as patent pending.

The most important reason that inventors opt to file a provisional patent is to obtain an early filing date for their invention. This protects the inventor from other inventors who may file a patent application for the same invention.

By obtaining an early filing date, the inventor's invention will have priority over them, meaning if the inventor's invention meets the patenting requirement, he will get the patent and subsequent filers won't be able to patent the same invention. Said differently, a provisional application saves a place in line for your invention, the first invention in line gets the patent, while other invention that are the same are booted.

Obtaining an early filing date for an invention is very important in the United States because the U.S has a "first to file rule" that awards the patent to the inventor that first files a patent application and not necessarily to the first person who invents an invention.

Do Provisional Patents Offer Protection?

Provisional patents (correctly known as filed provisional patent application) do not grant the inventor patent rights. This means that while a patent application is pending, an inventor or applicant does not have any patent rights to enforce against others, meaning an applicant cannot restrict others from using, making, selling, and importing the patent-pending invention to the United States.

Applicants only obtain the right to control who uses, makes, or sells their invention after the patent office grants their patent application.

Since filing a provisional patent application does not grant an inventor the right to restrict others from using, making, and selling his invention, inventors cannot sue parties that use or sell his invention without his permission. So, if you're an inventor, it's very important that you patent your invention as quickly as possible so that you can control who uses, makes, and sells your invention.

That said, adding the words patent pending should fend off bad actors from copying your invention because it signals to them that you're in the process of obtaining patent protection for your invention or product. However, including the designation does not guarantee that no one will copy your invention and sell it.

Having said that, if someone copies your invention and sells it, you may stop them from doing so if the patent office grants your patent. You can bring a lawsuit for patent infringement against them.

Filing a Nonprovisional Patent Application Within 1 Year of Your Provisional Patent Application

Although a provisional patent application reserves an early filing date for an inventor's invention, it does not turn into a patent. A provisional patent application just reserves a filing date, to obtain a patent, an inventor must file a nonprovisional patent application within 12 months of filing his provisional application.

The second, but rarely used option an inventor has is to convert his provisional patent application into a nonprovisional patent application, but filing a petition to convert instead of filing a nonprovisional patent application that references an earlier filed provisional application, is that an inventor loses the benefit of an earlier filing date by converting his provisional application.

If an inventor fails to file a regular, nonprovisional patent application within the 12 month grace period, his provisional application will be abandoned and he will lose the early filing date obtained by filing his provisional application.

What Do Inventors Do After Filing a Provisional Application

During the 12 month period following filing a provisional patent application, some inventors choose to pitch their inventions to investors who are interested in purchasing the rights to an invention either as patent-pending or as a granted patent. Some inventors look for licensing opportunities to license their inventions or products for others to use in exchange for a licensing fee or agreed upon royalty.

Some inventors have often not finished working on their invention, so they use the 12 month period to continue working on their invention, working out any kinks, and perfecting it so that they can describe it as accurately as possible in their regular, nonprovisional utility patent application.

For some inventors, the 12 month grace period allows inventors to take the time to prepare their nonprovisional patent application without having to worry about another party patenting their invention.

Again, a provisional application if prepared properly reserves an invention's place in line and gives the applicant's invention priority over other inventions that are the same.

Requirements to Get a Patent After Filing a Provisional Patent Application

If an inventor wants to patent his invention, he must file a nonprovisional patent application within 12 months of filing a provisional patent application. However, for an inventor to benefit from the early filing date of his provisional application, the description of the invention in the nonprovisional patent application must match the description the inventor provided in his provisional application.

If the patent examiner determines that the descriptions don't match, he will not allow the inventor to benefit from the earlier filed provisional application. On the other hand, if the invention described in the regular patent application matches the description of the invention in the provisional application, the patent examiner will proceed with the patent application.

Frequently Asked Questions

1) How long does a provisional patent last?

A provisional patent application gives inventors a 12 month grace period during which to file a nonprovisional (regular) utility patent application. After an inventor files a provisional patent application, he can market his invention as patent pending. He can also use patent-pending status to attract potential investors.

2) How to Get a Patent Pending?

The quickest, cheapest, and easiest way to get a patent-pending is by filing a provisional patent application with the USPTO. By filing a provisional application with the patent office, inventors and applicants can immediately begin marketing their product as patent pending. They can include the designation on the product itself, its packaging, and its accompanying materials.

3) How much does it cost to get a patent pending?

The USPTO charges applicants who are classified as micro-entities $70 to file a provisional patent application, small entities are charged $140 to file a provisional application, and large entities are charged $280. That said, it's wise to hire an attorney to assist you with the preparation of your provisional patent application. Attorneys typically charge anywhere between $2,500 to $3,500 to prepare and file a provisional application. However, you have to take into consideration that attorney fees vary greatly, depending on the complexity of your invention and where you attorney is located.

4) How long does it take to get a patent?

According to numbers from the USPTO, it currently takes inventors approximately 24 months to get their invention patented from the time they file their regular, nonprovisional patent application with the patent office. That said, the amount of time it takes for your individual application may be different depending on how well your application is drafted and the complexity of your invention. You should contact your attorney and ask them about your specific patent application.

How Long Does it Take to Get a Provisional Patent?

Inventors can get a provisional patent as quickly as they can prepare and file a provisional patent application. Filing a provisional patent application with the USPTO is fairly straightforward, easy, and inexpensive. However, applicants should hire an attorney to prepare and file a provisional patent for them. Making even seemingly minor mistakes in a provisional application could cause trouble down the road when the time comes to file a nonprovisional patent application. That said, if you have any general questions or comments, please feel free to leave them in the comments section below.


Design patent pending

Design Patent Pending

Inventors want to protect their invention as quickly as possible and display "patent pending" on their new invention or product to tell the world that they have taken the legal steps to protect their invention. We will discuss what design patent pending is, as well as how you can protect your design with the patent-pending designation.

What is Design Patent Pending?

Design patent pending is a legal status for an invention that can be obtained by filing a design patent application with the USPTO (United States Patent and Trademark Office). An inventor who files a design patent application with the patent office can immediately begin using the "patent pending" designation on the article or product that bears his patent-pending design.

An inventor can continue to use this designation until the patent office either grants or denies his patent application. If the patent office grants an inventor's design patent application or denies it, an inventor can no longer use the designation.

Many inventors file design patent applications to not only patent their invention but also to gain the ability to use the patent-pending designation. The designation can be a good tool to market your invention to the public and investors who see value in a product that is patent pending.

The main function of patent-pending is that it serves to inform the public that an inventor has taken the legal steps to protect his invention and that infringers may be legally liable for infringing upon an inventor's design patent.

Note: Patent-pending status does not allow inventors to stop others from using, making, or selling the patent-pending design. An inventor can only stop others from using, making, and selling an article bearing the inventor's design when the patent office grants the inventor's design patent application.

How to Get Design Patent Pending?

An inventor can get a design patent pending by preparing a design patent application, filing it with the USPTO, and paying the applicable filing fees.

The patent office allows inventors to prepare, file, and prosecute their own design patent application. However, they do recommend that inventors seek the assistance of an experienced patent attorney to prepare their patent application, make drawings for the design, and to file it with the patent office.

Once you or your attorney file a design patent application with the patent office, you can immediately begin marketing and advertising your product as patent pending. You can add the term patent pending to the product bearing your design, product packaging, and product materials.

Patent-pending status is immediate, the moment you file your design patent application, you can begin using the patent-pending designation.

How Long Does it Take to Get a Design Patent Pending?

Patent-pending status can be obtained as soon as you file your design patent application with the USPTO. The time it takes to get a design patent pending depends on how much time it takes you or your attorney to prepare a design patent application and file it with the USPTO. It typically takes attorneys between 1 week to 2 weeks to prepare and file a design application. The time it takes your attorney depends on how busy your attorney is and the complexity of the design you want to patent.

How Much Does it Cost to Get a Design Patent Pending?

It costs anywhere from $50 to $200 to file a design patent application. Micro entities pay $50 to file a design patent application, small entities pay $100, and large entities pay $200. That said, the majority of the cost associated with patenting a design is attributable to the attorney fees that an inventor has to pay an attorney to prepare a design patent application.

Attorneys typically charge $2,500 to $3,500 to prepare and file a design patent application. Lawyers may charge more if they have to communicate with the patent office on your behalf or if they have to make amendments or changes to the patent application. So, in total, you're looking at approximately $3,000 to patent your design.

When Can You Use Design Patent Pending?

You can use the "patent pending" designation as soon as you file a design patent application with the USPTO. You can use the designation on an article that incorporates your design, on product packaging, and other written materials. Just remember to make it clear as to what is patent pending in your invention.

Is Patenting Your Design Worth It?

Patenting your design is worth it if you know that you can profit from your design. If you have a product that sells well and it sells well because of its appearance or design, you should patent the design because it provides you with value. On the other hand, if your design isn't unique and doesn't add any value to the article to which it is applied, then it may not be worth your time and money to patent it. That said, you should consult with your own attorney to determine whether your design is worth patenting.

Can You Sell Something that is Design Patent Pending?

If you've applied your design to an article, you can sell the patent-pending article without any issues. Make sure to include the term "patent pending" on your article to serve as a warning to others who may want to copy your design. Of course, including the warning does not guarantee that your product won't be copied and sold by others, but it makes proving intentional patent infringement much easier because the designation itself serves as notice to others that the article will be legally protected in the future.

Going from Design Patent Pending to Patented Design

It currently takes the patent office 20.5 months to either grant or reject a design patent application. While a design patent application is pending, the patent examiner may communicate with the patent holder or his attorney to ask any questions or request that changes be made to the patent application.

However, most design patent applications are approved without any issues. So, hiring an experienced patent attorney to prepare and file your patent application is the best thing you can do to ensure that the process goes as smoothly as possible. Experienced patent attorneys may charge more upfront, but they may save you money in the long run.

Once the USPTO grants your design patent application, you will be able to restrict others from using, making, selling, offering to sell, and importing an article or product that bears your design, without your express permission. If a bad actor uses, makes, or sells your design without your permission, you can send them a cease and desist letter, asking them to stop their infringing behavior.

If they don't comply, you can enforce your rights by bringing a lawsuit against them in federal district court for patent infringement.

How to Speed Up Getting Your Design Patented?

You can speed up the examination and processing of your design patent application by filing a request for expedited examination using Rocket Docket. Rocket Docket cuts the time required to obtain a patent grant from 21 months to less than 6 months. Some applicants have reported obtaining a patent in as little as 4 months. So, if you have a design that you not only want to get patent-pending, but you actually want to patent, rocket docket will help you jump the line and get your patent approved in as little as 4 months.

Design Patent Pending

At this point, you should know that design patent pending means that an inventor has applied for patent protection for his design, but the patent office has not yet approved his patent application. Applicants who have a design that is patent-pending can use the patent-pending designation to advertise their product as pending a patent and they use the designation to ward off potential bad actors who may copy and sell the design. If you have any general questions or comments, please feel free to leave them in the comments section below.


Rocket docket for design patents

Rocket Docket Design Patents

If you've just finished working on a design, you probably want to patent it. Patenting a design in the United States takes 20.5 months from the date an applicant files a design patent application with the USPTO (United States Patent and Trademark Office). However, the USPTO offers an expedited service to inventors that allows them to patent their designs quicker. This expedited service is known as Rocket Docket.

What is Rocket Docket?

Rocket Docket allows design patent applicants to request an expedited review of their design patent application. Some inventors have patented their designs using rocket dock in under six months. They have been able to do so because if a request for expedited review is granted, an inventor's patent application is expedited and is given priority to other design patent applications.

That said, to qualify for expedited examination of a design patent application, there are some requirements that must be met. An applicant must:

  • Make a request for expedited examination to the USPTO
  • Pay the basic filing fees for a design patent application
  • Pay the fee for the expedited examination
  • Prepare a complete design patent application that is free of any errors
  • The application must include black and white drawings of the design he wants to patent
  • Have conducted a preexamination search
  • Prepare and include a statement that the preexamination search was conducted
  • Include a statement as to the field of the search must be included
  • Include an information disclosure statement must also be included

Can you Expedite the Review of Your Design Patent Application?

Yes, you can expedite the review of your design patent application. However, to qualify for expedited review of your application, you must satisfy the requirements we listed above, as well as filing a request for expedited examination, along with additional fees for the service to expedite the processing of your design application. So, how do you get your design patent application expedited? Read below to find out.

How Do You Request Expedited Design Patent Application Review?

An applicant for a design patent who wants to expedite the review of his design patent application can do so by filing a design patent application along with a request for expedited design patent application review. If you're filing your design patent application online, you can submit your design patent application along with a "Request for Expedited Processing, Design Rocket Docket."

That said, if you've already filed a design patent application and you want to expedite it after the filing of your patent application, you can do so by making an online request for expedited examination. If the patent office grants your request for expedited examination, your design patent application will be expedited throughout all steps of the process.

The patent office recommends that if you know that you want to expedite your patent application, you should file both the design patent application and request for expedited examination together to expedite the process. Filing them separately may cause some delays.

Applicants who request expedited examination will receive a confirmation from the patent office indicating that the examination process has been expedited.

How Much Does Rocket Docket Cost?

According to the USPTO, requesting expedited examination of a design patent application via Rocket Docket costs $225 for micro-entities, $450 for small entities, and $900 for large entities. This expedited examination fee is charged in addition to the normal filing fee for design patent applications.

The fee for expedited design patent application processing must be sent along with the request for expedited examination. If an applicant fails to send in the fee for expedited examination, the patent office will send you a notice of deficiency, if you don't respond to the notice, your design patent application will not be expedited and will be processed normally.

How Much Time Does It Take to Get a Patent With Expedited Examination?

According to applicants that we interviewed, it takes 4 months to 6 months to get a design patent application approved using expedited examination with rocket docket. Without using expedited examination for a design patent application, it typically takes the patent office 21 months to either approve or deny a design patent application.

Using rocket docket prioritized examination reduces the amount of time it takes the patent office to approve a design patent application by 75%. Applicants who have used rocket docket expedited patent examination have reported receiving their first office action within 1 month of filing their design patent application.

Application Completeness for Expedited Review

For an applicant to qualify for an expedited review of his patent application, the applicant must have not made any mistakes in preparing the patent application and patent drawings. The applicant must have included the proper filing fees and expedited review fees. The application must be 100% complete and free of any errors for it to be ready for review and examination by a patent examiner.

If a design patent application is complete but fails to comply with the requirements for expedited review, the patent office will notify the applicant of the deficiency and will give the applicant an opportunity to address and fix the deficiency.

Once an applicant fixes the deficiency, he must submit a renew request for expedited examination. If an applicant does not address any deficiencies with the request for expedited examination, the design patent will not be expedited and will continue through the patent process as would a regularly filed design patent application.

Rocket Docket Pre-examination Search

To expedite a design patent application using rocket docket, an applicant must conduct a pre-examination search to assist the patent office with their prior art search. The preexamination search must be thorough and complete. If the patent examiner suspects that you have not conducted a thorough search, he might reject your request for expedited review.

So, it's important that you conduct a professional prior art search for the design you're trying to expedite. Make sure to do as thorough a search as possible because if the design patent is litigated, you may have to answer questions about the search that you performed.

Benefits of Rocket Docket For Design Patents

Today, more than ever, bad actors around the world are copying the designs of others and selling them as originals. So, to combat this infringement, rocket docket expedited examination, allows inventors of new designs to quickly patent their designs to enforce their patent rights against bad actors who copy and profit from their original designs.

Design patents only allow inventors to enforce their rights once the patent office grants their design patent application. Prior to the patent office granting a design patent application, an inventor cannot stop others from copying, making, and selling his design.

However, once the patent office grants an inventor's design patent application, a patent holder will be able to enforce his right to stop others from using, making, selling, and importing his patented design to the United States.

The patent office is not responsible for looking for infringers and stopping them. It is the patent holder's duty to find those infringing upon his patent and asking them to cease the infringing activity.

If they do not respond to a patent holder's request to stop using, making, or selling his patented design, the patent holder can bring a lawsuit for patent infringement against the bad actor.

If the patent holder is successful in his lawsuit against someone copying and selling an article bearing his design, he will be able to obtain an injunction to stop them from engaging in activities that infringe upon his patent.

Also, in some circumstances, patent holders may recover monetary damages caused by the infringer using the patent holder's design without his permission.

Rocket Docket Expedited Design Patent Examination

If you have a design that you want to patent but don't want to wait 20+ months for the patent office to approve your design patent application, you can make a request to the patent office for expedited processing of your patent application.

Under expedited processing, applicants have reported having their design patent applications approved within 4 to 6 months of filing their design patent applications. It currently costs between $225 and $450 for inventors to expedite the review of their design patent applications. The fee is reasonable considering the time savings associated with expediting your application.

For some inventors, obtaining a design patent quickly is very important because it enables them to stop others from copying and selling the patented design without their permission. That said, if you have any general questions or comments, please feel free to leave them in the comments section below.


What are patent claims?

What are Patent Claims?

What Are Patent Claims?

Patent claims are arguably the most important part of a patent application. Patent claims set out the aspects of the invention that the patent protects. Patent claims set the scope of protection for the invention described in the patent, this serves to inform others of what they can and cannot do with the patented invention.

Patent claims define and set the scope for what a patent holder can stop others from doing with his patented invention.

For example, if someone were working on an invention to make a new pair of nail clippers, reading the patent claims of other nail clippers shows them what others have already patented so that they can invent something different that does not infringe upon patented inventions.

Patents grant inventors the right to stop others from using, making, selling, and importing the patented invention to the United States without the patent holder's express permission. So, to ensure that an inventor does not infringe upon the patent of another, he must look to the patent claims of other similar patents. This allows the inventor to avoid using or copying what patented inventions claim.

If an inventor's invention infringes upon a patent holder's invention, the patent holder may enforce his patent rights by bringing a lawsuit for patent infringement against the infringing party. To show patent infringement, a patent holder must show that a party copied all of the elements of a single patent claim.

If the patent holder is successful in doing so, he may be able to obtain an injunction to stop the infringing party from performing its infringing activities, he may also recover monetary damages to compensate him for patent infringement.

What's the Purpose of Patent Claims?

The purpose of patent claims is to set the scope of an invention. That is, a patent claims set out the scope of protection for a patent. A patent claim is similar to the description of a piece of land in that it sets out what the patent protects just as a deed for a piece of land sets out and identifies the piece of land it protects.

Once the patent office grants a patent application, the patent holder will be able to stop others from using, making, and selling the invention claimed in the patent holder's patent. Patents allow inventors to exclude others from using, making, and selling the patented invention for a limited period of time. For utility patents, this period of time lasts for 20 years, while for design patents, this period of time lasts for 15 years.

That said, patent claims are not included in a patent application to describe the invention, how it works, or how it's used. It's the job of the patent description, as well as patent drawings to assist the patent examiner and the public to understand how to make the invention, as well as how to use it.

Types of Patent Claims

There are two main types of patent claims and they are: independent claims and dependent claims. An independent claim is a patent claim that does not refer to any other claims and stands on its own. A dependent claim, on the other hand, depends on and refers to another claim and incorporates the entire claim or part of the claim by reference.

Typically, a patent application starts with Claim #1, which is the broadest claim in scope, with subsequent claims, such as Claim#2 and so on being narrower in scope.

What is an Independent Patent Claim?

An independent patent claim is a claim that stands on its own. Dependent claims typically refer to an independent claim, adding to the details and features of an independent claim. Independent claims are the broadest claims of a patent application with dependent claims being narrower in scope to illustrate the possible variations of an invention.

That said, independent claims can stand on their own, but dependent claims typically refer back to an independent claim, by referencing an independent claim or incorporating its language.

Example of Independent and Dependent Patent Claims

  1. A method comprising steps X, Y, and Z
  2. The method of claim 1, further comprising step A
  3. The method of claim, further comprising step D

In this example, Claim #1 is an independent claim because it does not reference any other claims. Claims #2 and Claim #3 are dependent claims because they reference Claim #1.

Special Types of Patent Claims

Jepson Patent Claims

A Jepson claim can typically be identified by looking at its components. A Jepson claims usually starts with a preamble that begins with the word "in" and ends with "an improvement comprising of." Jepson claims are usually used in the context of patenting an improvement to an already existing patent. Jepson claims usually makes a statement about prior art and then states how the improvement claimed by the current invention improves the prior art.

That said, we encourage anyone using Jepson claims to use them cautiously. This is so because, like with criminal matters, anything you state in your patent application can be used against you, either by the patent examiner or by other parties seeking to invalidate your patent. So, as a word of caution, don't include anything in your patent application, amendments, or changes to the patent application that you don't want others to know, because once you submit something, you cannot undo it.

Markush Patent Claims

Markush patent claims are used by applicants to identify a group of elements that can be selected from a list of elements that offer the same utility to the invention. Said differently, a Markush claim allows an applicant to select an element of an invention that can be substituted with different elements that share a common characteristic.

For example, a Marksuh group specifies alternatives in a patent claim by stating something like "a group that consists of X, Y, and Z." This signifies that either X,Y, or Z, which are members of the Markush group are alternatives that can be used for the invention described in the patent application.

Markush claims are beneficial for inventors because they reduce the number of claims that a patent application drafter has to make. This allows the inventor to avoid paying extra fees for including more than 20 claims. This is so because the USPTO charges applicants who include more than 20 claims to pay additional fees to make such an inclusion.

That said, one of the drawbacks of including a Markush claim is that courts usually construe Markush groups as being closed one, prohibiting applicants from claiming unlisted elements as part of the claim. To avoid limiting the scope of a claim, drafters should avoid limiting and closed language to leave the claims open to a somewhat broader interpretation.

Interpreting Patent Claims For Patent Infringement

If a patent holder brings a lawsuit against a party (defendant) for patent infringement, the court will look at the claims of the patent holder's invention and then compares them to the product or invention that the patent holder claims infringes upon his patent.

If the court determines that the defendant's product or invention incorporates all of the elements of a claim from the patent holder's invention, the defendant will be liable for patent infringement.

If the court finds patent infringement, the court may grant the patent holder an injunction to stop the defendant from using or making the patent invention.

The court may also award the patent holder damages for lost profits or reasonable royalties for the defendant's use or sale of his invention.

Patent Claim Advantages & Disadvantages

Patent claims are advantages to inventors because they lay out the scope of protection for an invention. To have a stronger patent, patent holders should hire an experienced patent attorney to draft their claims as broadly as possible to obtain the best patent protection. Although patent claims should be specific enough to accurately describe an invention, drafting claims too narrowly reduces the scope of patent protection.

Frequently Asked Questions

1) Should you draft patent claims yourself?

Patent applicants who do not have experience drafting patent applications should not draft patent claims themselves. Drafting patent claims is an art that should be left to professionals, such as patent attorneys and patent agents who have experience drafting patent claims to obtain the best patent protection possible for their clients.

2) What type of claim should your application start with?

If you're drafting a patent application, you should start with the broadest claim possible and then move down with narrower and narrower claims.

3) What is a patent claim infringement?

Patent claim infringement is a form of a lawsuit that is brought by a patent holder against a party that infringes upon his patent. Patent infringement lawsuits are brought in federal district court. For a patent holder to recover damages and/or obtain an injunction against an infringer, a patent holder must show that the infringer's product or invention incorporates all of the elements of a claim that the patent holder has patented.

Patent Claims

At this point, you should know that patent claims are the backbone of a patent application. They set out the scope of protection that a patent holder has over his invention. If you're someone who's working on an invention, you should search patents in the field of your invention to ensure that your invention functions differently from any other patent invention. You can do this by looking at the patent claims of an invention. You can find patent applications by conducting a patent search, using the USPTO patent database. If you have any general questions or comments, please feel free to leave them in the comments section below.


What are patents and trademarks?

What are Patents and Trademarks?

What Are Patents and Trademarks?

Patents are intellectual property rights that are granted to an inventor of a new invention, machine, process, design, or composition of matter. Patents protect inventions or designs from being copied by others. Trademarks are also intellectual property rights, but they protect words, logos, or symbols that are used by a person or business to identify them as the source of a good, product, or service.

For example, if you invent a new pair of nail clippers that work differently from any nail clippers on the market, you may be able to protect them (how they work) by filing for and obtaining a utility patent. Also, if your nail clippers have a new or unique design, you may be able to protect the appearance by obtaining a design patent over the appearance of your invention.

Trademarks, on the other hand, protect brand names and logos. So, if you have a business that sells computer parts and you've named it "Computer Rebel," you can register that name as a trademark with the USPTO to stop others from using that name to sell computers.

Hopefully, this example clarified the difference between what a patent protects vs what a trademark protects.

What are Patents?

Patents are intellectual property rights that allow inventors to control who uses, makes, and sells the patented invention for a limited period of time. Utility patents last for 20 years, while design patents last for 15 years. During the patent term, if any party wants to use, make, or sell the patented invention, it must obtain the permission of the patent holder to do so.

Types of Patents

The USPTO (United States Patent and Trademark Office) offers different types of patents to those who invent different things. The main types of patents that account for 99% of all applied for patents are utility patents and design patents.

Utility Patents

Utility patents protect the functional aspects of an invention, meaning they protect how an invention works and how an invention is used. Design patents, on the other hand, protect an invention's or object's appearance or looks.

Utility patents last for 20 years from the date an inventor files his patent application with the patent office. Design patents last for 15 years from the date the patent office grants a design patent application.

When are Patents Effective?

Patents are only effective after the patent office grants an inventor's patent application. After an inventor files a patent application and while it's pending, an applicant cannot restrict others from making and selling the patent-pending invention.

Inventors gain the right to control who uses, makes, and sells the patent invention only after the patent office approves or grants a patent application. This is so because before a patent is granted, there isn't anything to enforce.

Design Patents

Design patents allow inventors of new designs to protect them. Patenting a design allows an inventor to stop others from using, making, and selling the design for a limited period of time. Design patents last for 15 years from the date the patent office grants a design patent application. They protect the appearance or aesthetics of an object.

As a holder of a design patent, if someone copies, makes, or sells your patented design, you will be able to sue them for patent infringement in federal court. If your lawsuit is successful, you may be able to obtain an injunction stopping the infringer from performing the infringing activities. You may also be able to recover monetary damages if you can prove them.

What are Trademarks?

Trademarks are words, symbols, or designs that people use to identify themselves or their business as the source (provider) of a product or service that they offer to the public.

Registering a trademark with the USPTO offers trademark owners the ability to protect their mark from being used by others to advertise or sell similar products or services to those that the trademark owner registered his trademark for.

For example, if you register the trademark "Computer Rebel" for the class of goods for computers, you will be able to stop others from using the trademark to advertise and sell computers throughout the United States.

Trademark Examples

For example, take a look at Best Buy, they have registered the trademark "Best Buy" for the sale of electronics. By registering this trademark, they can stop others from selling electronics under that brand name.

The same goes for the trademark "iPhone" that Apple uses to sell its smartphones, no company that produces phones can call it's smartphone "iPhone" without being sued by Apple for trademark infringement.

Servicemarks

Trademarks can also be used for those offering services. Trademarks for services are referred to as servicemarks. Servicemarks are used for the same reasons as a trademark: to identify the source of a service.

Servicemark Example

An example of a service mark is Southwest, Southwest Airlines provides transportation services to its customers and it uses the words "Southwest" to advertise its transportation service to the public. Southwest has registered its trademark with the USPTO to protect its intellectual property.

So, if you have a word, symbol, or logo that you use to offer goods, products, or services to the public, you can protect that mark by registering it with the trademark office. Many countries, including the United States, allow inventors to register their trademark for enhanced protection.

Some Trademark Registration Benefits

In the United States, registering a trademark with the trademark office allows trademark owners to sue infringers in federal courts. By registering your trademark with the USPTO, you can stop others from using your mark or a confusingly similar mark to market and sell their own products.

Without trademark protection, anyone can use another's logo to confuse customers as to the source of goods or services. If someone else uses your trademark in a manner that confuses customers as to the source of a product or service, you can bring a lawsuit in federal court.

If your lawsuit is successful, you may be able to obtain an injunction to stop them from engaging in trademark infringement. In some circumstances, you may also be able to recover monetary damages.

Why Do Patents and Trademarks Exist?

Patents

Patents and patent law exist to encourage inventors to innovate and make new inventions that promote the general wellbeing of society. Patent law encourages inventors to make new things by offering them a limited period of time during which the patent holder can stop others from using, making, and selling the patented invention.

This allows inventors to make and sell the invention without having to compete with others copying their invention, allowing them to recoup the expense of developing and making the invention, as well as profiting from the invention. In exchange for this limited right, a patent holder must disclose the invention.

Since patents don't last forever, once the patent expires, others will be able to make and sell the invention once the patent holder's patent expires. To obtain a patent, an inventor must explain, with great detail, how to make the invention, as well as how to use the invention. This offers the public a blueprint on how to make and improve upon the invention once the patent expires.

Trademarks

Trademarks and trademark law exist for two main reasons: (1) to protect owners of marks who have spent the time and money to build goodwill for their mark, as well as, (2) to protect consumers from others who misuse the trademarks of others for their own profit.

Trademarks allow mark owners to establish a reputation for their brand and registering a trademark allows mark owners to protect their marks from misuse by others. By registering a trademark, a trademark owner can bring a lawsuit in federal court against any party that misuses or dilutes his trademark.

Protecting a trademark today is more important than ever because customers are increasingly reliant on their loyalty to and reputation behind a certain trademark when deciding to purchase products or services.

What are Trademarks and Patents?

Trademarks and patents are both forms of intellectual property rights granted by the USPTO. However, they are different in the type of IP that they protect. Patents protect designs, inventions, machines, and processes, while trademarks protect words, symbols, or designs that are used by a person or a business as a brand to signify the source of a product or service. Obtaining IP protection makes your IP more valuable and assist you with protecting it from misuse by others. If you have any general questions or comments, please feel free to leave them in the comments section below.


What is patent infringement?

What is Patent Infringement?

What is Patent Infringement?

At it's most basic form, patent infringement is a wrong committed by a third party against the rights of a patent holder during the term of a patent. A party can commit patent infringement by using, making, selling, offering to sell, or importing a patented invention to the United States without the express permission of the patent holder. Patent infringement can be committed at any time while a patent is in its grant state, meaning that the patent term is still active. What constitutes patent infringement can vary from country to country, but this is the most encompassing definition for patent infringement.

Utility patents last for 20 years from the date an inventor files his patent application and design patents last for 15 years from the date the patent office grants a patent application. While a patent is granted (in its active state) the patent holder has the right to stop anyone from using, making, selling, offering to sell, and importing the patented invention to the United States without his permission.

If anyone uses, makes, or sells the patented invention without the patent owner's permission in the United States, the patent holder can sue them in Federal District Court for patent infringement. Patents issued by the USPTO only protect inventors in the United States. Any infringement that happens in a different country, has to be resolved in that country under that country's patent laws.

For example, if you patent a pair of nail clippers in the United States and someone in China copies the nail clippers and sells them in China or Brazil, you are out luck and cannot do anything about it unless you also patent your product in both China and Brazil.

So, if you're a patent holder and you anticipate that you want to profit from your invention by selling it or manufacturing it abroad, you should also patent your invention in all the countries where you want patent protection. You can do this by either filing a patent application in every country where you want protection or by filing a PCT (Patent Cooperation Treaty) application with WIPO.

Determining Patent Infringement

The analysis for determining patent infringement is the same whether you're dealing with a utility patent, design patent, or plant patent. If you just received a cease and desist letter from a company that claims that you're infringing upon its patent, take a moment, check the cease and desist letter and check to see the specific patent that they claim you're infringing upon.

To determine whether patent infringement has taken place, you need to pull up the patent they claim you're infringing upon, you can do this by simply googling the patent, using Google Patents to find the patent, or searching for the patent using the USPTO patent database. Once you've found the patent they're referencing, you should look at the patent claims.

Read the patent claims carefully because for there to be patent infringement, the product the patent holder alleges infringes on his patent must function exactly the same as one of the claims of the patented invention.

Each patent claim is typically made up of different elements, so to prove patent infringement, the patent holder has to prove that all elements of a single patent claim are the same. So, if your invention functions differently from the patent claim or uses different steps to achieve the same result as a patent claim, you may be able to successfully defend against patent infringement.

That said, if your invention functions substantially similarly to the patent holder's invention, you may still be liable for patent infringement. To determine infringement, the court will look at all of the evidence it has to determine whether patent infringement has occurred.

Since we don't know anything about your specific case, if you've received a cease and desist letter from a party claiming that you infringed upon their patent, it's best to contact your patent attorney and ask them to evaluate your specific situation.

To assist your attorney, you should talk to your product engineer, ask them to look at what the patent holder alleges infringes upon his patent and tell him to prepare notes as to how your invention or product differs from the patent holder's invention. This will assist your patent attorney in determining whether infringement has occurred.

What Happens if There is Patent Infringement?

If a patent holder can show that a party infringed upon his patent, the court may award the patent holder an injunction to stop the infringer from continuing to use, make, sell, or import the infringing product to the United States without the patent holder's permission.

Also, the court may award the patent holder monetary damages in the form of either royalties or lost profits. Royalties are often determined by looking at what the patent holder charges other parties to license his invention, royalties paid for the use of similar inventions, the popularity of the patented product, and the benefit that's added to the infringer's product by using the patented invention. There is a long list of factors, but we believe that these are the most important factors to focus on.

Defending Against Patent Infringement

When parties are served with patent infringement lawsuits, they often use the following defenses to defend against a patent infringement lawsuit: (1) defending against the lawsuit by arguing that the patent holder's patent is not valid either because it's not novel (new) or because the invention was obvious at the time of filing the patent application.

For example, if a patent holder has patented what he claims is a new nail clipper that promises more precise nail clipping, an alleged infringer can defend the lawsuit by arguing that the invention is not novel (new) by providing evidence that the patent holder's nail clippers where publicly available or patented by a different party and therefore, the patent holder's patent should be invalidated and since the patent is invalid, no infringement has occurred.

The second most common defense is (2) arguing that your product or design does not infringe upon the patent holder's invention because it's different than what the patent holder has patented.

For example, if you've developed an algorithm for predicting the stock market and you get sued for patent infringement. The patent holder then claims that your algorithm infringes upon a patent that he holds, you can defend the lawsuit on the grounds that your algorithm does not infringe upon his patent because it uses a different method to achieve its result.

Is Patent Infringement Civil or Criminal?

Normally, patent infringement is addressed through civil means, meaning that the infringer is not criminally prosecuted. In the United States, patent infringement is a strict liability civil offense, meaning that if a patent holder is able to show that someone else used, made, sold, or offered to sell his patented invention without the patent holder's express permission, the infringer would be strictly liable for patent infringement in a civil lawsuit.

The United States does not have any criminal statutes for patent infringement, all patent infringement matters are handled in civil courts. Whether criminal punishment should be imposed on patent infringers is a topic for another day.

Strict liability means that the patent holder does not need to show that the infringer knew he was infringing upon the patent holder's patent, but only that the infringer's product or invention functions the same as the patent holder's invention. If a patent holder is successful in his lawsuit, he may be able to recover monetary damages, as well as obtain injunctive relief to stop the infringer from infringing upon his patent.

How to Avoid Patent Infringement?

If you want to avoid patent infringement, you should conduct a patent search for relevant inventions. Once you've found inventions that are similar to the one you want to make, make sure that your invention functions differently from the inventions with live patents.

It's okay if your invention achieves the same result as other inventions, but the key is to have your invention achieve the desired result differently from any patented or publicly disclosed inventions.

Said differently, your invention has to work differently from currently patented inventions. Look at other patents that are similar to the invention you're developing and find a way to make your invention work differently, yet achieve the same result.

If you don't know how to perform a patent search, contact an experienced patent and hire them to conduct an analysis of relevant patents to determine whether your invention infringes on any live patents.

Note: Merely changing the appearance of an invention is never enough to avoid patent infringement. If your invention works the same way as a patented invention but looks totally different, you may still be liable for patent infringement because patents not only protect how an invention looks, but also how an invention works or how it achieves its results.

So, if you're working on a product or invention, it's worth your money and time to hire an attorney to research your invention, as well as relevant inventions to clear your invention.

Patent Infringement

At this point, it's apparent that patent infringement occurs when a party uses, makes, sells, offers to sell, or imports a patented invention to the United States without the patent owner's express permission.

Patent infringement can be avoided by taking the time to research relevant patents in the field of your invention, and ensuring that your invention not only looks different but functions differently from patented inventions.

Infringing on the patent of an individual can be costly and usually leads to a civil lawsuit where the infringer has to pay damages to the patent holder and cease his infringing activities.

We also covered how patent infringement is determined by the courts, as well as some of the defenses that those accused of patent infringement may use to defend against a patent infringement lawsuit. If you have any general questions or comments, please feel free to leave them in the comments section below.


Patent exhaustion

What is Patent Exhaustion?

What is Patent Exhaustion?

The patent exhaustion doctrine holds that once a patent holder sells a product in the United States, a patent holder's rights with regards to the object sold are terminated at the time of the initial sale. Said differently, once you purchase a patented product, the patent holder no longer has the right to control what you do with the product you purchased, but a patent holder can still stop you from replicating the article and selling a copy of it.

So, if you were to purchase a patented product, you can sell the product or license its use to another party without committing patent infringement.

That said, the purchaser of the patented product has the right to resell the exact product he purchased without the patent holder's permission. However, he cannot duplicate the product and sell a copy of it without the permission of the patent holder. The patent holder retains the right to stop anyone from copying his product and selling a copy of the patented product or invention.

Although patent exhaustion extinguishes a patent holder's rights, the patent holder may still restrict what you do with the purchased product through a contractual agreement. For example, if you purchase disposable glucose tests that state "single use only" and you're caught reusing them, you won't be liable for patent infringement, but you may be liable for breach of contract under contract law.

Patent Holder's Rights

A patent grants an inventor the right to restrict others from using, making, selling, and importing the patented invention or product to the United States for a limited period of time, usually 20 years for utility patents and 15 years for design patents.

Patent law grants inventors patents to encourage them to innovate and develop new products that improve our daily lives. Patents encourage inventors to innovate because they allow inventors to exclude others from making and selling the patented invention, allowing inventors to be the only ones profiting from making and selling the patented invention or product.

That said, once an inventor makes and sells a patented product, the purpose of patent law is satisfied and the inventor cannot interfere with the purchaser's use and enjoyment of the article sold. Said differently, once a patent holder sells you a product that he has patented, the patent holder can't stop you from using and selling the article that you purchased from him.

However, the fact that you can use and sell the article that he sold to you, does not mean that you can copy it and sell the copy, you can only sell the exact article you purchased from him. An inventor retains the right to stop you from making the patented product and selling a copy of it.

If anyone copies an inventor's invention and sells the copy, the inventor has the right to sue them for patent infringement. If the patent holder is successful, he may be able to recover any lost profits or damages he suffered as a result of the infringer's activities.

Post Sale Restrictions

In the portion above, we covered sales of an article or product by the inventor without any restrictions, let's cover the situation where a patent holder sells a patent article with restrictions. This area of patent law is a bit muddy, but we'll do our best to explain it to you.

In 1992, The U.S Supreme Court ruled that if a patent holder sells a patented article or product with a restriction on it, the purchaser of such a product must comply with the post-sale restriction. The court based its reasoning not on patent law, but on contract law. The court stated that a patent holder exhausts all rights after selling a patented product, but a patent holder can place a contractual restriction on the product sold.

For example, if a patent holder has a patent on a glucose monitor, he can place a restriction, such as "single use only," and you, the purchaser, would have to comply with that restriction. You would have to comply with the restriction because it's a contractual agreement that you enter into with the patent holder when you purchase the patented article or product.

So, if you purchase a product that has a restriction on it, such as "single use only," but you use the product multiples times, you will not be liable for patent infringement, but you may be liable for breach of contract.

Some Federal District Courts have ruled against this, but the Supreme Court ruling still stands, so if you're in a situation where you purchased a patented product that has a restriction on it, contact your attorney and ask them whether you have to abide by such a restriction. Each situation is different so you need to ask an attorney to look at your specific situation to assess your options.

Post Sale Restrictions by Licensee

Patent law treats licensees who license a patented invention differs from the average person purchasing a patented product. When the average person purchased a product that is protected by a patent, he is unlikely to be aware of any restrictions on the use or sale of such product.

However, when a licensee and patent holder enter into a licensing agreement, the licensee knows the scope of the license, meaning he knows what he can and cannot do with the patented invention. Unlike the scenario where someone purchases a patent product and the product becomes his, a licensee is only allowed to use the patented invention, title to the invention does not pass to the licensee.

So, the concerns that are present for the average person are not present for a licensee. So, licensees are limited in what they can and cannot do with an invention, these terms are usually included in the licensing agreement.

Some patent holders require licensees to place post-sale restrictions on purchasers of the patent holder's patent article or invention. The same laws that apply to post-sale restrictions apply to a licensee's sale of the patent holder's patented invention with a post-sale restriction.

Conclusion

Exhaustion law currently states that once a patent holder sells a patented product, the patent holder no longer controls what the purchaser does with the product that he purchased. However, the law is unclear as to what effect having a post-sale restriction on a product that is sold to someone.

Most would agree that patent holders can place restrictions on patent products that they sell. However, such agreements are not covered under patent law, rather they are governed by contract law.

So, if a patent holder sells a patented product that has a restriction on it, the purchaser must abide by the restriction but not because of patent law, but rather because of contract law. So, if a purchaser violates the agreement, he will not be liable for patent infringement, but rather for breach of contract under contract law.


What is patent prosecution?

What is Patent Prosecution?

What is Patent Prosecution?

When some people hear the term patent prosecution, they think of the prosecution in a criminal matter, however, for patents, it's quite different. Patent prosecution is the process of preparing a patent application, filing it with the patent office, and negotiating with the patent office in order to have them grant a patent application. Patent prosecution is different from patent litigation. Patent litigation typically occurs when parties are involved in a dispute, such as patent infringement.

Patent Prosecution Steps

  1. Preparing a patent application
  2. Reviewing the application
  3. Filing the patent application with the USPTO
  4. The patent office then conducts a patent search for prior art
  5. The patent office then examines the patent application
  6. The patent examiner issues the first office action
  7. The patent office may object to the claims of the patent application
  8. The applicant will have an opportunity to respond to the objection by the patent office
  9. The patent application will either be granted or rejected
  10. If rejected, the applicant can appeal the rejection

Preparing a Patent Application

Patent prosecution begins when an applicant begins to prepare a patent application. To obtain a patent, an applicant must thoroughly describe the invention that he wants to patent. He must explain how to make the invention, as well as how to use the invention. Regular, nonprovisional utility patent applications must have formal patent claims that layout the new functions of the invention.

Most applicants include drawings as part of their utility patent application to further describe the function of their invention. Drawings make it easier for the patent examiner to understand how the invention works, as well as its scope.

Typically, during this step, a patent attorney will try to ascertain whether an inventor publicly disclosed the invention or offered it for sale more than 12 months prior to filing a patent application. This is so because public disclosure of the invention more than 12 months prior to filing a patent application bars an inventor from patenting the invention because it would be considered as prior art.

Every patent application should include the following:

  • A thorough and complete description of the invention
  • Patent claims
  • Specification sheet
  • Inventors oath or declaration
  • Patent filing fees, search fees, and examination fees
  • Drawings of the invention

Note: If you forget to include any of the following in your patent application, the patent office will send you a letter requesting the missing information. Make sure that you promptly reply to such a request to avoid abandoning your patent application.

Reviewing a Patent Application

After drafting a patent application, an attorney will typically have the applicant review the application to ensure that the application thoroughly and accurately describes the invention to be patented. Once a review is completed, an attorney will file the application with the USPTO.

Filing a Patent Application

The United States has adopted a "first to file rule" that awards a patent to the inventor who first files a patent application with the patent office. This rule incentivizes inventors to file a patent application with the patent office as soon as they can describe how to make the invention. Before filing a regular utility patent application, some inventors choose to file a provisional application to obtain an early filing date for their invention.

That said, after drafting a regular patent application, inventors then file it with the patent office as soon as possible to obtain that early filing date we talked about. To file a regular patent application with the patent office, an applicant will have to pay the required fees.

These fees include:

  • Nonprovisional (regular) patent application filing fee
  • Patent search fee
  • Patent examination fee
  • Additional pages fee (when applicable)

The party who first files a patent application is the one who will be able to patent that invention. Anyone who files after won't be able to patent that same invention.

Patent Office Patent Search & Examination

Once an inventor files his patent application with the patent office, the application is assigned to an art examination unit. This unit will conduct a patent search to determine if any relevant prior art exists to bar the patentability of the invention.

Patent examiners perform a search of the USPTO patent database, as well as other journals and magazines that relate to the field of the invention to determine if the invention claimed in the application has already been disclosed or patented.

The patent office may also use search engines to find relevant prior art. If the patent examiner finds prior art that is the same or similar to the invention to be patented, he may reject the patent application on the grounds that prior art exists to prohibit patenting the invention.

First Patent Office Action

After the patent examiner conducts a patent search and examines the patent application, he will issue what's known as the first office action. The first office action lists the claims that the patent examiner has allowed to go forward, as well as any problems or deficiencies with the patent application. Patent applicants are allowed to respond to office rejections. More on responding to office rejections below.

Opportunity to Respond to Rejections

The patent applicant will typically have an opportunity to respond to such rejection. The applicant usually responding by giving the patent examiner reasons as to why the invention is different from the prior art brought up by the patent examiner.

The applicant may also make amendments to the patent application to fix the problems brought up by the patent examiner. If the applicant chooses not to respond to the office action, his application may be abandoned.

So, how long do applicants have to wait to patent their inventions?

The amount of time it takes for the patent office to conduct its prior art search and patent examination depends on the complexity of the invention, as well as the patent load that a technology unit has. According to statistics from the USPTO, it currently takes 24 months on average, measured from the filing date of a patent application, for the patent office to either grant or deny a patent application.

For applicants who don't want to wait for 24 months to patent their invention, they can make a request to use the USPTO's Track One priority service that promises to either grant or deny a patent application within 12 months of filing a patent application. That said, the USPTO only offers this service for 10,000 applications per year.

Appealing a Rejection

If the patent examiner issues a final rejection for your invention, you may still be able to patent it, but you have to file an appeal with the USPTO. Applicants who appeal rejections, argue that the patent office wrongfully rejected the application, so you will have to make your strongest arguments as to why the patent examiner got it wrong and why you should be granted a patent for your invention.

If you successfully appeal the rejection the patent office will grant your patent application and your invention will be issued a patent. That said, if the patent office issues a final rejection for your invention and you do not appeal the rejection, your patent application will be abandoned.

What Isn't Patent Prosecution

As discussed, patent prosecution is the process of obtaining a patent by preparing, filing, and communicating with the patent office to obtain a patent. Patent prosecution does not involve bringing a lawsuit or defending a lawsuit for patent infringement.

When you're responding to or bringing a patent infringement lawsuit, the process is known as patent litigation. Patent prosecution takes place at the USPTO, while patent litigation usually takes place in a federal district courtroom between two private parties making and defending allegations of patent infringement.

Patent prosecution takes place between an inventor and a patent examiner so that an inventor can protect his invention. Patent prosecution has nothing to do with violating laws and criminal charges, rather it has to do with the process of patenting an invention.

Hiring an Attorney or Patent Agent to Prosecute Your Patent Application

Although the USPTO allows inventors to prepare, file, and prosecute their own patent applications, they recommend that inventors hire an attorney to assist them with these tasks. The patent office makes this recommendation because patent law is complex and inventors are usually unfamiliar with patent law and the process of patenting an invention.

Having an attorney at your side assisting you with patenting your invention can save you time and money by avoiding costly mistakes. Also, you may have to communicate with the patent office to make amendments and changes to your patent application. Having an experienced patent attorney assist you will help you obtain the best patent protection possible.

If you don't have the money to hire an attorney, you should explore the option of hiring a patent agent.

Patent agents are licensed by the USPTO to assist inventors with preparing, filing, and prosecuting their patent applications. They typically charge less than patent attorneys because they aren't attorneys, but they do have experienced working with the patent office assisting inventors to patent their inventions.


What is patent novelty?

What is Patent Novelty?

If you have a great invention or design that you want to patent you probably heard that your invention has to be novel in order for it to qualify for a patent. We will explain the novelty requirement in great detail below.

What is Patent Novelty?

For an inventor to be able to obtain a patent, he must show, among other things, that his invention is novel (new). The novelty requirement prohibits inventors from patenting inventions that have been patented in the past or inventions that an inventor has publicly disclosed, offered for sale, or sold more than one year prior to filing a patent application with the USPTO.

Said differently, if you want to patent an invention, you cannot patent something that has already been patented or an invention that you have publicly disclosed more than one year prior to filing a provisional or nonprovisional patent application.

The novelty requirement was added to prevent people from patenting the same inventions over and over again. If an inventor publicly disclosed his invention or offered it for sale more than one year prior to filing a patent application, he will not be allowed to patent it because the patent office considers it as prior art that prohibits patenting it.

So, does your invention pass the novelty test?

To determine whether your invention passes the novelty test, you should hire an attorney to perform a patent search (commonly known as a prior art search or a novelty search) and a search of public databases to determine whether someone has already disclosed or patented the invention you want to patent.

When conducting a prior art search, your attorney will do his best to prove that your invention is not new. Approaching a search this way allows your attorney to document similar inventions and discuss the differences (if any) between them and your invention.

Attorneys typically perform a prior art search by performing a search of the patent database and all relevant publications. For example, if you want to patent a glucose-measuring medical device, your attorney will search medical publications that discuss new glucose measuring technology.

That said, no prior art search is perfect, sometimes an attorney's search will not turn up any prior art even after a patent is granted.

So, once you've satisfied novelty, what else do you need to show to patent your invention?

In addition to the novelty requirement, an inventor must show that his invention has patentable subject matter, is nonobvious, and serves some useful purpose. The two most difficult requirements to satisfy are invention novelty and nonobviousness. Now that you know what novelty is, what's nonobviousness?

Nonobviousness requires an inventor to show that his invention was nonobvious at the time he filed his patent application. That is, the inventor has to show that an ordinary person, experienced in the field of the invention would not believe the invention to have been obvious.

For example, if you're developing a new drug that promises to cure cancer by combining new and unique ingredients that have never been combined before, you have a pretty good shot at satisfying the nonobviousness requirement.

That said, this is just an example we used to illustrate the nonobviousness requirement, your invention does not have to be this nonobvious to qualify for a patent, nevertheless, it has to satisfy this requirement.

Now back to patent novelty, why is it important? Read below to find out.

Why is Patent Novelty Important?

Patent novelty is important because it prevents people from re-patenting inventions that were already patented. Just imagine a world where a patent on an invention expires and another party patents the same invention. Patents on inventions would last forever.

This is why we have a novelty requirement, to prevent patents from lasting indefinitely. This frees up technology and allows inventors to improve upon technology that was once patented.

The second benefit of having a patent novelty requirement is that it prevents others from patenting inventions that have already been disclosed to the public. For example, if you publish new battery technology in a car magazine, others won't be able to patent it after you've published it because it's considered as prior art that prevents patenting publicly disclosed inventions.

How Do You Keep Your Invention Novel?

If you don't want your invention to become prior art, here are a few tips:

  • Don't discuss your invention with anyone, including friends and family
  • Don't publish your invention on any websites, magazines, or journals
  • Don't offer your invention for sale
  • If you need to talk about your invention with anyone have them sign a confidentiality agreement
  • Don't sell your invention

Now that you know what you shouldn't do to keep your invention novel, what if someone discloses your invention?

If someone publicly discloses your invention, you should immediately prepare and file a patent application with the patent office. Filing a provisional patent application is a quick way to protect your invention by obtaining an early filing date.

Once you have a filing date, anyone else who submits a patent application to the patent office after you've filed a patent application won't be able to patent the same invention.

Confidentiality Agreement

If you need the assistance of anyone with your invention and you're still not ready to file your patent application, consider having a party sign a confidential agreement before disclosing your invention to them. By having them sign a confidentiality agreement, you're not publicly disclosing your invention.

That said, confidentiality agreements are not perfect because sometimes a party to an agreement may not keep your invention confidential. So, if someone discloses your invention, you should immediately contact an attorney and ask them about filing a provisional application to secure a filing date for your invention.

Securing a filing date is really important in the U.S because it uses a "first to file system" that awards the patent to the first person who files a patent application with the USPTO. So, it's best to contact a licensed patent attorney and ask them about the option of filing a provisional application.

Filing a Provisional Application

Inventors often choose to file a provisional patent application instead of filing a regular, nonprovisional utility patent application to protect their invention because provisional applications are much easier to prepare and file, they're also a lot less expensive than nonprovisional applications.

Provisional applications are great in the U.S because they allow inventors to secure an early filing date for their invention while they continue to work on their invention.

While the patent office allows inventors to prepare and file provisional patent applications on their own, they do recommend that applicants hire a patent attorney to assist them. They make this recommendation because patent law is complex and making minor mistakes could cause costly problems down the road.

One thing to note is that provisional applications do not turn into patents, so if you file a provisional application to secure an early filing date for your invention, remember that you need to file a nonprovisional utility application to patent your invention.

That said, once you file a provisional application, you have 12 months to file a regular patent application. If you don't file a regular, nonprovisional application within the 12 month grace period, your application will be abandoned and you will lose the benefit of your early filing date, so don't forget to file a regular application!

Check out this awesome, straightforward guide to filing a provisional patent application.

That said, before filing a provisional patent application, you may want to speak to your attorney and ask them about how you should proceed with protecting your invention.

Novelty Abroad

You may or may not know that a patent issued by the USPTO (United States Patent and Trademark Office) only protects inventors in the United States. That is, an inventor can only restrict others from using, making, selling, and importing the invention to the United States.

A U.S patent does not offer protection in countries other than the U.S. So, if you want protection abroad, you will need to file a patent application in the country where you want protection.

Other countries aren't as forgiving as the United States. The U.S gives inventors a 12 month grace period to file a patent application after disclosing their invention, other countries require absolute novelty, meaning that the invention has never been disclosed or offered for sale.

Many European countries require absolute novelty, meaning that if the inventor or any other party publicly discloses the invention anywhere in the world, the inventor will be barred from patenting his invention.

So, if you anticipate that you want protection overseas, make sure that you do not disclose your invention to anyone, as disclosing it make cost you the opportunity to patent your invention.

Novelty Requirement to Patent an Invention

At this point, you should know that to patent your invention or design, it must be novel, meaning that your invention has never been publicly disclosed by you or others. Also, you must not have sold or offered the invention for sale more than 12 months prior to filing a patent application with the patent office.

That said, if you want to protect your invention, research the patent laws where you want to patent your invention because some countries don't allow any disclosure of the invention before patenting it. If you have any general questions or comments, please feel free to leave them in the comments section below.